World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. Shawn Vink

Case No. D2011-0635

1. The Parties

The Complainant is Pfizer Inc., New York, New York, United States of America, represented by Kaye Scholer, LLP, United States of America.

The Respondent is Shawn Vink, Orlando, United States of America.

2. The Domain Name and Registrar

The disputed domain name <buy--viagra.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2011. On April 12, 2011, the Center transmitted by email to, eNom a request for registrar verification in connection with the disputed domain name. On April 12, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2011.

The Center appointed William F. Hamilton as the sole panelist in this matter on May 26, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant owns the world well known VIAGRA brand for its product sildenafil citrate indicated for the treatment of erectile dysfunction. The VIAGRA mark was registered with the United States Patent and Trademark Office in 1998. VIAGRA is marketed in over 150 countries. VIAGRA branded products have been promoted extensively in the United States and around the world and have been featured extensively on television, magazine, and Internet stories and articles. The Complainant owns the website “www.viagra.com”. The Complainant has expended millions of dollars on research, development and marketing of VIAGRA.

The Respondent registered the disputed domain name was registered on February 23, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant asserts the disputed domain name is confusingly similar to its VIAGRA mark by virtue of incorporation of the entire mark VIAGRA into the disputed domain name. The Complainant further asserts the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has never authorized the Respondent to utilize its well known VIAGRA mark. The Complainant asserts that the Respondent has registered and continues to use the disputed domain name in bad faith to promote and to market counterfeit products and to otherwise attract unsuspecting consumers to the Respondent's website that features advertisements and links to various products treating erectile dysfunction.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:

i) The respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and

ii) The respondent has no rights or legitimate interests in respect of the domain name; and

iii) The respondent’s domain name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

The Panel has no difficulty in determining that the disputed domain name is confusingly similar to the Complainant's mark. The mark VIAGRA is entirely incorporated into the disputed domain name. The addition of the generic word "buy" as a prefix is of no significance. UDRP panels have consistently held the mere addition of a generic prefix or suffix to a well known mark will not avert a finding that the disputed domain name is confusingly similar to the well known mark. Adobe Systems Incorporated v. Jeff Bluff, Online RX Sales LLC, WIPO Case No. D2006-1475

The Complainant has met its burden under Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel determines that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has asserted the Respondent has never been affiliated with or authorized by the Complainant to use the disputed domain name or the VIAGRA mark. It does not appear the Respondent is known by the disputed domain name or the VIAGRA mark. It is also apparent that the disputed domain name is being utilized for commercial benefit. Under these circumstances the burden shifts to the Respondent to come forward with evidence of some rights or legitimate interests in the disputed domain name. The Respondent has made no such showing having failed to file a response to the Complaint despite being duly noticed. Moreover, Respondent has illegitimately used the Complainant's mark in the disputed domain name to attract customers and to re-direct them to competing products. Pfizer Inc. v. CheapViagraStore, WIPO Case No. D2005-0159; Lilly ICOS LLC v. Redzone, WIPO Case No. D2005-0534; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba, WIPO Case No. D2004-0941; Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. The Complainant has established, as required by paragraph 4(a)(ii) of the Policy, that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel determines the disputed domain name was registered and is being used in bad faith. The Respondent's commercial intent to trade on the Complainant's brand is apparent and obvious. VIAGRA is an internationally well known mark. It is unlikely that the Respondent was unaware of the VIAGRA mark when the disputed domain name was registered. Pfizer Inc. v. Vartan Seferian, WIPO Case No. D2001-0316. Indeed the disputed domain name resolves to a landing page offering "generic" VIAGRA. The Respondent's obvious intent is to attract unsuspecting Internet customers to its website for commercial gain. The Respondent's use of Complainant's mark VIAGRA to generate visitors to Respondent's site constitutes bad faith. See Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285; Pfizer Inc. v. Schreiner & Co., WIPO Case No. D2004-0731; Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600; Pfizer Inc. v. Generic Viagra Pills, WIPO Case No. D2004-0592. Considering all the above circumstances, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that the Complainant has met the requirements of Paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <buy--viagra.com> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Dated: June 9, 2011

 

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